DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 and 9-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shanghai (WO 2023077877 A1; May 11, 2023; See English Translation).
Regarding claims 1 and 16, Shanghai discloses a pet food composition and supplement comprising protein (e.g. cheese is rich in protein: page 3), fiber (e.g. from the coconut component; page 2), and fat (pages 2-3; See Examples).
Shanghai teaches that the fat comprises at least tributyrin, which is a short chain triglyceride, in an amount of 10 and 15% by weight (See Examples). Therefore, Shanghai teaches that the composition comprises about 7 wt% or more fat, the fat comprising one or more short chain triglyceride.
Regarding claims 2-5 and 17-19, as stated above with respect to claim 1, Shanghai teaches that the short chain triglyceride is tributyrin, which comprises three fatty acid components comprising 4 carbon atoms (e.g. tributyrin is composed of three molecules of butyric acid, which have 4 carbon atoms; page 3).
Regarding claims 9-11, the examiner notes that the composition being “formulated to” does not add anything more structurally to the composition. As Shanghai anticipates the composition of claim 1, the composition of Shanghai would necessarily be formulated to perform the same functions as claimed as the composition of the instant invention and that of Shanghai are exactly the same.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claims 12-14, Shanghai discloses a method for improving the health of a pet by providing a pet food composition comprising protein (e.g. cheese is rich in protein: page 3), fiber (e.g. from the coconut component; page 2), and fat (pages 2-3; See Examples).
Shanghai teaches that the fat comprises at least tributyrin, which is a short chain triglyceride, in an amount of 10 and 15% by weight (See Examples). Therefore, Shanghai teaches that the composition comprises about 8 wt% or more fat, the fat comprising one or more short chain triglyceride.
With respect to the limitations “increasing the concentration of metabolite beta-hydroxybutyrate…wherein the amount of metabolite beta-hydroxybutyrate increases by about 5% or more an hour after consumption of the pet food” in claim 12, “the method decreases the glucose to ketone index by about 12% or more” in claim 13, and “wherein the pet has a glucose to ketone index from about 35 to 59 as assessed about one hour after consumption” in claim 14, the examiner notes that these limitations do not add anything more to the pet food itself.
As Shanghai anticipates the pet composition, the composition of Shanghai would necessarily be formulated to perform the same functions as claimed as the composition of the instant invention and that of Shanghai are exactly the same.
As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on "inherency" under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products.
Regarding claim 15, Shanghai teaches that the pet is Felis domesticus (page 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 6 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Shanghai (WO 2023077877 A1; May 11, 2023; See English Translation) as applied to claims 1 and 16 above.
Regarding claims 6 and 20 , as stated above, Shanghai teaches that the short chain triglyceride is present in an amount of 10 and 15% by weight (See Examples).
Shanghai, however, fails to teach that the short chain triglyceride comprises about 10% by weight or more of the total amount of fat as Shanghai teaches other ingredients that are known to comprise fat, such as cheese.
However, it would have been obvious to one of ordinary skill in the art to vary the amount of short chain triglyceride in the fat component depending on the desired properties. Shangahi teaches that the short chain triglyceride inhibits the growth of bacteria, increases the proliferation of mucosal cells and promotes the development of intestinal tract to protect the intestinal health of the animal (page 3), and therefore it would have been obvious to have the total amount of fat comprise 10% by weight or more of the short chain triglyceride as it would increase the associated benefits for the fat composition.
As stated in MPEP 2144.05: Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shanghai (WO 2023077877 A1; May 11, 2023; See English Translation) as applied to claim 1 above, and further in view of Clark et al, (US 2005/0042362 A1; Feb. 24, 2005).
Regarding claims 7-8, as stated above with respect to claim 1, Shanghai teaches that the pet food comprises protein through the presence of cheese and fiber through the presence of coconut. Shanghai teaches that the protein affects the growth of the animals and the fiber protects the intestinal health (pages 2-3).
Shanghai, however, fails to specifically teach the claimed amounts of protein and fiber.
Clark discloses a pet food composition comprising fat, protein and fiber, wherein the protein is present in an amount of 25-70% by weight ([0012]), thus overlapping the claimed range of 15 to 55 wt%, and the fiber is present in an amount of 7.12% by weight (Table I: cellulose), thus falling within the claimed range of 1 to 15 wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. (MPEP 2144.05 I)
As Clark teaches that it is well known in the art for a pet food to comprise protein and fiber in similar amounts as claimed, it would have been obvious to one of ordinary skill in the art to have the protein and fiber of Shanghai be in similar amounts as taught by Clark in order to provide proper nutrition to the pet.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANIE A KOHLER whose telephone number is (571)270-1075. The examiner can normally be reached Monday-Friday 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nikki Dees can be reached at (571) 270-3435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANIE A KOHLER/Primary Examiner, Art Unit 1791
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